IP: Is the U.S. fashionably late to the party?

Contrary to popular opinion, fashion is not just about branding. Believe it or not, the style, quality and originality of the product are actually quite important too. Is it not therefore important that we should have laws to protect a product’s uniqueness that are comparable to the trademark laws that protect the brand?

There have been several attempts in the last few years to extend U.S. copyright to cover fashion designs, including the proposed Design Piracy Prohibition Act in 2006 and the Innovative Design Protection and Piracy Prevention Act in 2010, but so far these have not been successful. Ingenious intellectual property lawyers in the U.S. have therefore had to rely on other laws, such as copyright provisions, which were created to protect sculpture rather than garments.

By contrast, the European Union has had a harmonized law for 10 years, which protects designs with a legal regime that is separate but parallel to copyright.

European design law encompasses both a registered and unregistered design right. A registered design right provides monopoly protection for up to 25 years, renewable in five-year tranches. But it’s the unregistered design right, which protects a piece from copying for just three years, that is of more relevance to the fast moving fashion industry

A designer may produce numerous designs in a season and will not necessarily know which ones are going to be the most commercially successful. Registering a design is less expensive than registering a trademark, but even so, it can be prohibitively expensive to register an entire collection. Unregistered design rights, on the other hand, are free and provide extremely broad protection (the European law is wide enough to cover materials and colors, as well as shape and configuration). They may only last for three years, but three years is a long time in fashion.

Some brands will adopt a strategy that utilizes both forms of European design right. A shoe manufacturer, for instance, may have distinctive patterns on the soles of its shoes, which it will use again and again. These soles can be protected with a registration, while unregistered rights are used to protect copying of the uppers, which are more likely to change with every season.

The need for tougher laws in fashion is often framed in terms of the impact of technology on the catwalk. The speed of modern communications and manufacturing can mean that “knock-offs” are able to hit the stores just days after their catwalk premiere. But opponents of new laws say that legislation to stop this would be an irrelevance. After all, the consumers who decide to purchase cheap mass market imitations are very unlikely to be the same consumers who would spend thousands of dollars on a couture garment. If the trademark has not been infringed, where’s the harm?

However, fashion feuds are not limited to high-end design versus mass-market. The industry is much more layered than that. Original designs are also produced by mid-market stores and it is here that design rights are of vital importance. One chain store may employ an in-house design team to produce a new range of clothing (or watches or handbags or jewelry) and find that their designs are being copied, rebadged and sold by a competing chain that does not have to pay designers and so is able to undercut the originator. Here, the battleground is for the same consumers’ dollars.

Critics of proposals to reform U.S. law point out that the fashion industry has always relied on imitation and inspiration and that design protection would cripple the industry. That has not been Europe’s experience. Protecting that innovative spark only incentivizes creativity since lazy copying is no longer acceptable.

Further, those critics fear increased litigation brought about by new legal rights and argue that small designers who cannot afford lawyers will be disadvantaged. There are those, even in Europe, who share these views. Some designers prefer to simply use social media to “name and shame” design copyists. For example, designer Tatty Devine recently launched a Twitter campaign against UK retailer, Claire’s Accessories.

Readers of my previous article for InsideCounsel will know that I do not condone unnecessary and ill-judged litigation, but do believe a design right claim is often a better course of action than trial by media. Social media can be a useful tool, (as of course can traditional media, the influence of which should not be ignored) but naming and shaming will not get you damages, undertakings or injunctions. It may even be counter-productive. Consumers might not look upon the infringement with disgust; they might simply take away the message that they can buy essentially the same product elsewhere, for less money.

A designer being “ripped off” is often newsworthy, but that doesn’t mean that the media is a more cost-effective forum. On the contrary, the fear of adverse publicity coupled with strong legal rights mean that there is an incentive on defendants to settle design right cases early. Such settlements will usually involve payment of damages and legal fees. In that context, using lawyers to enforce design rights is an extremely cost-effective exercise.

The European design right laws are not perfect, but practical experience suggests that in the main, these rights do provide an effective sanction against those who would rather imitate than innovate.